Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA193274
`ESTTA Tracking number:
`02/18/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168871
`Defendant
`Digium, Inc.
`Nathan W Johnson
`Bradley Arant Rose & White LLP
`1819 Fifth Avenue North
`Birmingham, AL 35203-2104
`UNITED STATES
`njohnson@bradleyarant.com
`Motion to Compel Discovery
`Crystal G. Wilkerson
`cwilkerson@bradleyarant.com, njohnson@bradleyarant.com
`/cwilkerson/
`02/18/2008
`Motion to Compel 2.pdf ( 41 pages )(907159 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Mr. Daniel A. Mendoza
`
`Opposerlcounterclaim
`Defendant,
`
`v.
`
`Digium, Inc.
`Applicantlcounterclaimant.
`
`-.r-qr-I-I-I-—-I-u-I-—a-—d~—r
`
`Re:
`
`Serial No. 78I479,744
`ASTERISK (& Design)
`
`OPPOSITION NO. 91168871
`
`APPLlCANT’S MOTION TO COMPEL
`
`OPPOSER’S RESPONSES TO INTERROGATORIES AND PRODUCTION REQUESTS
`and ANSWERS TO REQUESTS FOR ADMISSIONS
`
`I. MOTION TO COMPEL
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`Digium, |nc., (“Applicant”), moves, pursuant to Rule 37 of the Federal Rules of Civil
`
`Procedure and 37 CFR § 2.120(e), that this Honorable Board compel Mr. Danie! A. Mendoza
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`("Opposer") to fully answer Applicant Digium‘s Second Set of interrogatories to Opposer
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`Mendoza, to produce the documents and things requested in Applicant Digium’s Second Set
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`of Requests for Documents, and to fully answer the Applicant's Second Set of Requests for
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`Admission. As stated in more detail below, Applicant has sought to communicate with
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`Opposer to discuss this motion and the relief requested herein prior to filing, but has not
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`received any reply.
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`ll. BRIEF IN SUPPORT
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`In support of the Applicant‘s Motion to Compel set forth above, Applicant shows forth
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`unto this honorable Board the facts and argument as follows:
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`a. Factual Background
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`Discovery is closed. The testimony period for Opposer is set to close on March 21,
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`2008.
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`1/16700l9.1
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`This proceeding was initiated by Opposer in January 2006. Applicant served its first
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`set of discovery in July 2006. On November 13, 2007, the Board granted Applicant's prior
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`motion to compel related to that first set of discovery. The discovery in that first set is the
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`subject of a separately-filed Motion for Sanctions, in which Applicant contends that the
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`Opposer has willfully failed to comply with the Order of the Board.
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`Discovery, as reset, closed on Saturday, December 22, 2007. Prior to the close of
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`discovery, Applicant served its Second Set of Discovery Requests, including interrogatories,
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`Requests for Production, and Requests for Admission.
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`In light of the perceived continuing
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`evasiveness and non-responsiveness of the Opposer, Applicant prepared and served the
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`Second Set of Discovery in an effort to secure at least some of the more critical aspects of
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`discovery already requested in the Applicant's First Set of Discovery, but which had not been
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`fully answered despite the Order of the Board compelling such answers. Accordingly, the
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`Second Set of Discovery is directed to information and documents that already should have
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`been produced and provided, but for which Applicant hoped that more targeted inquiry might
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`increase the chance of meaningful response from the Opposer.
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`On December 26, 2007, Opposer served its first set of discovery on Applicant,
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`responses to which Applicant served on January 30, 2008, in accordance with the time for
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`response provided by the rules.
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`On January 28, 2008, Opposer filed a Motion for Extension of Time to answer the
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`discovery in the Appiicant's Second Set of Discovery. Prior to service of the Motion for
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`Extension, Opposer did not communicate with Applicant or its counsel in any attempt to seek
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`extension or to otherwise coordinate for the provision of a portion of responses to the
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`Second Set of Discovery.
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`In fact, to date, the only contact received from the Opposer
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`regarding the Second Set of Discovery is the service copy of the Motion for Extension.
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`On February 11, 2008, Applicant filed a response to the Motion for Extension,
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`opposing that motion on various bases. Applicant at that time sent correspondence to
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`1/1670019.}
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`Opposer indicating that unless the parties were able to resolve the discovery issues within
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`the next few days, Applicant would have to once again have no choice but to seek the
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`intervention of the Board. Opposer also has attempted to contact Opposer by telephone,
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`using multiple telephone numbers previously used or provided by Opposer in connection
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`with this proceeding, but all such attempts resulted in either a continuous ring until the line
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`cut off (with no answering service, voicemail, or answering machine pick—up). or an
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`immediate “fast busy" signal
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`indicating that the line was not responding. Applicant's
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`correspondence of February 22, 2008, Opposer mentioned this situation and requested new
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`contact information, but Opposer has not responded or provided such updated information.
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`Accordingly, Applicant has attempted unsuccessfully to contact Opposer regarding the
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`matter, and has sent a request for consultation to the Opposer by mail to the address of
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`record.
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`Opposer has not responded to the Second Set of Discovery. Opposer has not
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`responded to Applicant’s letter of February 11, 2008. Opposer has not replied to the
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`Applicant’s response opposing the motion for extension. Applicant Digium beiieves that it
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`has exhausted all reasonable means to contact Opposer Mendoza to discuss these matters
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`in detail. Because of the inability to discuss the matters, no resolution has been reached
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`relating to the discovery issues.
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`b. Grounds for the Second Motion to compel
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`1.
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`Applicant’s Second Set of Discovery was timely served. Copies of the
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`Applicant’s Second Set of Discovery are attached as Exhibit A, including the transmittal
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`letter to Opposer and proof of service of the same, and the Applicant’s Second Set of
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`interrogatories, Applicant’s Second Set of Requests for Admission, and Applicant's Second
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`Request for Production of Documents and Things.
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`2.
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`Applicant is entitled to full answers to its discovery. An unassailable right of
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`every litigant is to know the case brought against it, and to have the opportunity to challenge
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`I/1670019.]
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`

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`that case based on the facts. Hickman v. Taylor, 329 U.S. 495, 501 (1947); Loctite Corp. v.
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`Fel—Pro, Inc., 210 U.S.P.Q. 280, 287 (N.D. Ill. 1980)(appiying Hickman in the context ofa
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`patent infringement claim).
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`3.
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`Opposer admits the existence of a large body offiles. Opposer further admits
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`the importance of these files. Opposer acknowledges that the Second Discovery Set
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`“contains important body of files to research, assemble and prepare, and indeed a fair
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`number of important questions to respond to.” (See Opposer’s Januagg 2008 Motion for
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`Extension (at docket entry no. 30), which motion (without its attachments) is attached
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`hereto as Exhibit B).
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`4.
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`Opposer does not have a bona fide need for additional time. Any continued
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`failure for Opposer to have reviewed these materials by the present date is attributable solely
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`to the Opposer’s own delay. Opposer has been aware of these files and the need for review
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`of these materials for discovery purposes for over eighteen (18) months, in connection with
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`prior discovery served as Applicant's First Discovery Set. Despite eighteen (18) months and
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`an Orderfrom this Board compelling discovery, Opposer’s own remarks indicate that he has
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`not reviewed the large quantity of materials in his possession or control in connection with
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`the First Discovery Set.
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`In light of this history of conduct of Opposer, there is no reason to
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`believe that Opposer would rationally use any additional time in a good faith attempt.
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`Moreover, the subject matter of the Applicant’s Second Discovery Set is within the scope of
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`that First Discovery Set, meaning that if Opposer had produced discovery in the manner
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`ordered by this Board, (1 ) there wouid have been no need forthe Second Discovery Set, and
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`(2) Opposer would have already answered the discovery in the Second Discovery Set, had
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`Applicant served it in any event.
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`5.
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`Applicant has a bona fide need forthe information and things requested. For
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`example, among the items specifically identified for production is the hard drive referred to in
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`Opposer's December 3, 2007, Amended lnterrogatory Responses per the Board’s Order (of
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`I/1670019.]
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`record in this proceeding at docket reference no. 26), which hard drive Opposer admits may
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`contain recoverable information.
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`it is apparent that Opposer is not undertaking the recovery
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`himself. By way of example, other items and information requested include information
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`regarding (i) alleged steps taken by Opposer to obtain governmental approvai, (ii) dollar
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`amounts spent by Opposer on advertising, and (iii) un-redacted copies of business
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`contracts, each of which are central to the question of veracity of the claims made by
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`Opposer, including, without limitation, in connection with his requests for extension of time to
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`file statements of use (see, e.g., the Request for Extension of Time to File a SOU with Sworn
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`Statement of Daniel Mendoza, attached hereto as Exhibit C) and to the questions ofactual
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`use and priority.
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`6.
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`Opposer does not challenge the relevance of the information and things
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`requested. Rather, Opposer’s motion admits the importance of the files that have yet to be
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`reviewed. (See, e.g., excerpt at paragraph 3 above and Exhibit B).
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`7.
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`Opposer’s prior conduct
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`in connection with the First Set of Discovery
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`suggests that short of an order compelling discovery, Opposer will continue delays and
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`evasiveness in connection with production and answers.
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`8.
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`Applicant Digium has not unreasonably detayed in seeking relief pursuant to
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`this Motion to Compe! as evidenced by the facts that: (1) the Opposer’s answers to the
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`Second Set of Discovery were not due until January 26, 2008 (which fell on a Saturday, so
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`Opposer had until January 28, 2008, to serve his responses); (2) Opposer prepared and
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`replied to the Opposer’s Motion for Extension in a timely manner, and has soughtto provide
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`time for the Board to act on the Motion prior to filing this Motion to Compel; (3) Applicants
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`counsel attempted to make contact with Opposer by telephone, and upon inability to
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`succeed in making contact, sent paper and electronic correspondence to Opposer, forwhich
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`in good faith Applicant has provided Opposer some days for response; and (4) this Motion is
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`filed prior to the opening of Opposer’s testimony period.
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`1/1670019.]
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`

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`In consideration of the foregoing, Applicant respectfully requests that the Board
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`issue an order compelling Opposer Mendoza to (A) fully answer, without objection, the
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`Applicant’s Second Set of interrogatories; and (B) fully answer, without objection, Applicanfs
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`Second Set of Requests for Admission; and (C) to produce, without objection, all documents
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`and things requested by Applicant.
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`February 18, 2008
`
`Crystal (3. Wilkerson
`One of the Attorneys for
`Applicant Digium, inc.
`
`OF COUNSEL:
`BRADLEY ARANT ROSE & WHITE LLP
`1819 Fifth Avenue North
`
`Birmingham, AL 35203-2104
`(205) 521-8369 (Direct Dial)
`(205) 488-6369 (Direct Facsimile)
`
`I/16700191
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`

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`Transmittal of Discovery to Opposer Mendoza With Copy of Discovery Requests
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`is
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`1/1670019.]
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`

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`I
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`'
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`BRADLEY ARANT ROSE 2; WHITE LLP
`
`DBCSIIIDBI‘ 22,
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`First Class Certified Mail, Return Receipt
`Mr. Daniel Mendoza
`
`PO. Box 193156
`
`San Francisco, CA 941 19-3156
`
`ONE FEDERAL PLACE
`I819 Flt-TH AVENUE NOFITI-1
`BIRMINGHAM. AL .'3520.'3'2Il9
`
`205.521.3000 FAX 205.521.8800
`
`w\wv,sRA0LEYAFeAnrr_coM
`
`Nathan W. Johnson
`
`Direct Dial: (205) 521-8369
`Direct Fax: (205) 438-6369
`njohnson@bradleyarant.com
`
`RE:
`
`Trademark Opposition No. 91 168871
`AppIicaut’s Second Set of Interrogatories to Opposer
`App1icant’s Second Set of Requests for Production of Documents and Things
`Applicant’s Second set of Requests for Admissions
`
`Dear Mr. Mendoza:
`
`I am enclosing with this correspondence Digium, Inc.’s second set of discovery requests
`(interrogatories, Requests for Production, and Requests for Admission) in connection with the
`above-referenced opposition proceeding. Please recognize that the enclosed discovery requests
`are in addition to the first set of discovery requests. These additional inquiries and requests have
`become necessary in light of the content and volume of your previously-served responses. We
`request that you fiilly answer and respond to these in the manner and time provided by the
`regulations of the Trademark Trial and Appeal Board and the Federal Rules of Civil Procedure.
`These requests _d_g n_ot extend the time to answer prior outstanding discovery. If a portion of the
`subject matter of one of these requests happens to fall within a prior request, you should consider
`the prior deadlines and Orders of the Board to _stil_l apply to the affected portion.
`
`With respect to the previously-served discovery requests, we note your comment in a
`recent submission to the effect that you intended supplement by December 22, 2007. You made
`this undertaking while advising that materials remained to be reviewed and provided by you. As
`of the date of -deposit of this correspondence, I have not received notice from you advising that
`your responses are complete. Please provide us with all responsive documents,
`things and
`answers immediately. If all materials and information have been provided, please so state.
`
`In this regard, we take this opportunity to note that the last two documents that you
`served to us in this proceeding include certificates of service which state that you placed the
`same in the U.S. Mail to us on the last day for you to serve such documents under the applicable
`rules. However, the official post mark date stamps of the U.S. Post Office indicate that the
`documents were not received for processing by the Postal Service on the date specified in the
`certificates of service. Please see TBMP 113 for rules regarding service of papers, with which we
`cordially request that you make a special effort to comply. We reserve the right to raise the issue
`of any failure to timely answer and serve your discovery -responses and other documents in this
`
`78
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`.
`78 EIRMINGHAM
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`1/I64
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`CHAF?LO'|'l'E
`
`HUNTSVILLE
`
`JACKSON
`
`MONTGOMERY
`
`WASHINGTON, DC
`
`

`
`Mr. Daniel Mendoza
`
`December 22, 2007
`Page 2
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`proceeding. For example, see TBMP 403.03 and 371 CFR 2.120(a) regarding remedies available
`against a party that fails to timely respond to discovery requests. As a reminder, please recall that
`we have not consented to service by electronic means.
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`I take this opportunity to remind you that we have suggested the opening of certain
`dialogue regarding settlement and co—existence, but we have received no reply.
`If you become
`interested in such possibilities, please contact me. Do not hesitate to contact me with any
`questions or concerns.
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`Enclosures
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`NW}/bn
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`I/l647878.1
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`

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`Mr. Daniel Mendoza
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`December 22, 2007
`Page 3
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`CERTIFICATE OF SERVICE
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`I hereby certify that I have on the date set forth below served the above and
`foregoing letter and attachments on:
`
`Daniel Mendoza
`
`P.O. Box 193156
`
`San Francisco, CA 94119-3156
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`by placing a copy of same in the United States Mail, first-class, certified, return-receipt-
`requested, postage prepaid, and addressed to his regular mailing address as noted above,
`on the 22nd day of December, 2007.
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`/Mfr'«U5e«2.«rvp/
`OF COUNSEL
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`1/1647878.!
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91168871
`Application Serial N 0.
`78/479,744
`
`@
`MARK‘ Astensk
`
`) )
`
`) )
`
`)
`)
`)
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`) )
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`)
`)
`)
`
`DANIEL A. MENDOZA,
`
`Plaintiff—Opposer,
`
`v.
`
`DIGIUM, INC.
`Defendant-Applicant.
`
`APPLICANT’S SECOND SET OF INTERROGATORIES TO OPPOSER
`
`Pursuant to Rule 33 of the Federal Rules of Civil Procedure and Rule 2.120(d) of the
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`Trademark Rules of Practice, Defendant-Applicant, Digiurn, Inc. (“Applicant”), by its attorneys,
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`requests
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`that Plaintiff-Opposer, Daniel Mendoza
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`(“Opposer”)
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`answer
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`the
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`following
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`interrogatories under oath within thirty (30) days from the date hereof. Terms shall have the
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`meanings set forth in the definitions of the Applicant’s First Set of Interrogatories to Opposer,
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`served previously. To the extent that information responsive to an interrogatory of this Second
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`Set of Interrogatories is also, in whole or in part, responsive to a prior discovery request, this
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`Second Set of Interrogatories shall not extend the time for fully answering the prior request, and
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`shall not be construed as a waiver of any objection or opportunity for remedy that Applicant may
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`have.
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`1/1647313.]
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`

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`INTERROGATORIES
`
`RE UEST FOR INTERROGATORY N 0. 30
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`Identify each of your places of employment and employers by name, address, and type of
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`business, for all employment you have had since 2001, and state the dates that you have worked
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`there.
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`RE UEST FOR INTERROGATORY N0. 31
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`Identify the Wireless protocol and standards of communication used by the wireless
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`internet services, if any, provided by you to your customers (including, without limitation, for
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`each of those customers identified in Exhibits 103A, 103B, 103C, 204A, 104B, 104C, 105A, and
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`105B), also designating the type of encryption used, if any, such as IWPA, WPA2, non-broadcast
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`SSID, MAC address filtering, or WEP.
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`REQ QUEST FOR INTERROGATORY NO. 32
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`Identify, by common technical terms in the ir1dustry,_the spectrum used by the wireless
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`internet services, if any, provided by you to your customers (including, without limitation, for
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`each of those customers identified in Exhibits 103A, 103B, 103C, 204A, 104B, 104C, 105A, and
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`10513).
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`REQUEST FOR INTERROGATORY NO. 33
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`Identify the location to which you moved the 50 boxes referenced on page 3, lines 5
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`through 8, of Plaintiffs Amended Interrogatory Responses Per Board’s Order, (filed with the
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`TTAB on December 3, 2007).
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`l/1647313.]
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`2
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`RE UEST FOR INTERROGATORY NO. 34
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`Describe your business models in connection with each of the JUST SAY * mark, and the
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`* mark, including, without limitation, a specific description of what you do for each entity, such
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`as the H20 Cafe, that agree to post your flyers, and a description of how you generate revenue or
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`make money from such activities.
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`REQUEST FOR INTERROGATORY NO. 35
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`State which of the following describes your customers, either (i) businesses, such as H20
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`Cafe, or (ii) individual persons that use the machines and internet connection provided by
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`businesses such as H20 Café.
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`RE UEST FOR INTERROGATORY NO. 36
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`Identify all countries in which you have resided, and for each country, state your
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`citizenship status.
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`RE§ QUEST FOR INTERROGATORY NO. 37
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`Identify all proceedings (by forum or court, proceeding number, date, and Venue) in
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`which you are or have been named as a party, and for any such proceeding in which any form of
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`relief was requested against you, stating the charge or basis of the request for relief and the
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`outcome (for purposes of this interrogatory, a “charge” or “request for relief” shall include, but
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`not be limited to, criminal charges, civil allegations seeking remedy, and sanctions of any type in
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`any proceeding).
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`RE; [UEST FOR INTERROGATORY NO. 38
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`Describe the services provided by Opposer to the H20 Cafe on or before November 2,
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`2006.
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`1/l647313.l
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`3
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`RE UEST FOR INTERROGATORY NO. 39
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`Describe each payment made by you to the H20 Cafe in connection with the contract
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`identified as Plaintiff’ s Exhibit 103A.
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`REQUEST FOR INTERROGATORY N0. 40
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`Describe each payment made by the H20 Cafe to you in connection with the contract
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`identified as Plaintiffs Exhibit 103A.
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`REQUEST FOR INTERROGATORY NO. 41
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`Identify by name, phone number, address, and date contacted, each person or entity
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`contacted by Opposer in an effort to put Opposer’s mark into use, as referenced in Interrogatory
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`Response No. 5 and Requests for Adn1issionsResponse Nos. 11 and 12, and for each such
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`person or entity identify whether a contract for services was entered into with Opposer, and if so,
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`the date of such contract.
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`REQUEST FOR INTERROGATORY NO. 42
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`Identify by name, phone number, address, and date contacted, each person or entity
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`contacted by Opposer in connection with product development and research activities, stating the
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`nature and subject matter of the discussion.
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`RE! [UEST FOR INTERROGATORY NO. 43
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`Recite verbatim and describe the text and any other information or material that is blacked
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`out from the face of the contract with the H20 Café identified as Plaintiffs Exhibit 103A,
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`explaining why the text has been blacked out.
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`REQUEST FOR INTERROGATORY NO. 44
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`Describe in detail how you monitor and control the quality and availability of the wireless
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`access services available at the H20 Cafe.
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`l/1647313.]
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`4
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`RE UEST FOR INTERROGATORY NO. 45
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`The Statement of Use filed in connection with Application Serial No. 78/ 188277 claims a
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`date of first use anywhere as of November 2, 2006 and a date of first use in commerce of
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`November 3, 2006. Describe the use of the mark which took place between November 2, 2006
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`and November 3, 2006 which gave rise to use in commerce (e.g., explain why first use was
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`November 2, 2006, but first use in commerce was not until November 3, 2006).
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`REQUEST FOR INTERROGATORY NO. 46
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`Describe your education and background in the area of computer
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`science and
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`telecommunications.
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`REQUEST FOR INTERROGATORY NO. 47
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`Describe the relationship between Daniel A. Mendoza and the Just Say * Network (for
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`example, identify whether Just Say * Network is the name of separate business entity).
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`RE UEST FOR INTERROGATORY NO. 48
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`Describe the steps taken to obtain governmental approval for any products or services
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`offered by you in connection with the JUST SAY * mark or the * mark, including in your answer
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`the name, phone number, address, date contacted, and title of each person or entity contacted by
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`Opposer in connection with Opposer’s seeking governmental approval, stating the nature of the
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`approval sought, and the outcome.
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`REQ QUEST FOR INTERROGATORY NO. 49
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`Identify the amount Opposer spent each year on advertising each of the JUST SAY * mark
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`and the * mark, giving separate numbers for each by year from 2001 to present.
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`REQUEST FOR INTERROGATORY NO. 50
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`Opposer’s answer to Applicant’s Interrogatory No. 14 identifies Www.voiceplay.com,
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`www.justsay.net, www.netpohnenumber.corn, and “others” as websites used in connection with
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`1/1647313.]
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`5
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`goods and services provided in connection with Opposer’s marks. Identify all of the “other”
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`websites, stating for each the dates of operation.
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`REQUEST FOR INTERROGATORY NO. 51
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`Identify all persons or entities to which you directly provide wireless internet access
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`services (as opposed to “branding” a third party provider’s wireless internet services with your
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`marks).
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`REQUEST FOR INTERROGATORY NO. 52
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`Identify all of your employees, such employees’ dates of employment, and describe the
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`nature of the work provided, from 2001 to present.
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`REQUEST FOR INTERROGATORY NO. 53
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`Identify all products or services you have had approved or certified by a governmental
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`agency or third party.
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`RE! QUEST FOR INTERROGATORY NO. 54
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`Identify and describe all equipment and software you own, rent from others, license from
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`others, or lease from others, for you to provide, monitor, or control wireless internet services.
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`REQUEST FOR INTERROGATORY NO. 55
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`Spell out, using letters of the alphabet, how you pronounce your * mark when spoken.
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`RE UEST FOR INTERROGATORY NO. 56
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`Describe your relationship with Ronald Squillante, including the nature of any business
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`dealings, the financial terms, and the date the relationship began and ended.
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`REQ [UEST FOR INTERROGATORY NO. 57
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`Identify the date that the hard disc drive referenced on page 3, lines 10 through 15 of
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`Plaintiffs Amended Intelrogatory Responses Per B0ard’s Order (which you filed with the TTAB
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`1/1647313.]
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`6
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`on December 3, 2007) was injured or damaged, as suggested by Opposer. If the exact date is
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`unknown, provide your best estimate of the date.
`
`REQUEST FOR INTERROGATORY NO. 58
`
`Define the terms “dis arate wireless communication and corn uter networks” as used in
`P
`
`the description of services for U.S. Registration No. 3218515.
`
`REQUEST FOR INTERROGATORY NO. 59
`
`List all brands, model numbers, and types of cellular phones for which you provided
`
`wireless internet access on or before November 2, 2006, specifically identifying for each the
`
`communications protocol (e.g., GSM, TDMA, CDMA, etc.) by which the internet access is or
`
`was provided.
`
`RE UEST FOR INTERROGATORY NO. 60
`
`Identify all entities or persons that pay you for internet access, and state the amount paid
`
`to you by each to date.
`
`REQUEST FOR INTERROGATORY NO. 61
`
`Identify all internet service providers that you use to provide internet access to others.
`
`RE UEST FOR INTERROGATORY NO. 62
`
`Describe your efforts to ensure that you have fully responded to all discovery propounded
`
`by Applicant, and to comply with the Board’s Order dated November 13, 2007.
`
`/
`
`l/1647313.]
`
`7
`
`

`
`OF COUNSEL:
`
`BRADLEY ARANT ROSE & WHITE LLP
`
`One Federal Place
`
`1819 Fifth Avenue North
`
`Birmingham, Alabama 35203 -2 l 04
`Telephone: (205) 521-8000
`Facsimile: (205) 521-8800
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I have on the date set forth below served the above and foregoing
`Applicant’s Second Set of Interrogatories on:
`
`Mr. Daniel Mendoza
`
`PO. Box 193156
`
`San Francisco, CA 94119-3156
`
`by placing a copy of same in the United States Mail, certified, return-receipt requested, first-
`class, postage prepaid,_and addressed to his regular mailing address, on the 22"“ day of
`December, 2007.
`
`OF COUNSEL
`
`l/16473111
`
`8
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91168871
`Application Serial No.
`78/479,744
`
`@
`MARK: Astensk
`
`) )
`
`) )
`
`)
`)
`)
`
`) )
`
`)
`)
`)
`
`DANIEL A. MENDOZA,
`
`Plaintiff-Opposer,
`
`V.
`
`DIGIUM, INC.
`Defendant—Applicant.
`
`APPLICANT’S SECOND SET OF REQUESTS FOR
`- PRODUCTION OF DOCUMENTS AND THINGS
`
`Pursuant to Fed. R. Civ. P. 34 and Rule 2.120(d) of the Trademark Rules of Practice,
`
`Defendant—App1icant, Digium,
`
`Inc.
`
`(“Applicant”), by its attorneys,
`
`requests that Plaintiff-
`
`Opposer, Daniel Mendoza (“Opposer”) produce the following under oath within thirty (30) days
`
`from the date hereof. Terms shall have the meanings set forth in the definitions of the
`
`Applicant’s First Set of Interrogatories to Opposer, served previously. To the extent that
`
`responsive documents or things are also, in whole or in part, responsive to a prior discovery
`
`request, this Second Set of Requests for Production shall not extend the time for fully answering
`
`the prior request, and shall not be construed as a waiver of any objection or opportunity for
`
`remedy that Applicant may have.
`
`1/1 6472651
`
`

`
`REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
`
`REQUEST FOR PRODUCTION NO. 34:
`
`Provide the hard disc drive referenced on page 3,
`
`lines 10 through 15 of Plaintiff's
`
`Amended Interrogatory Responses Per Board’s Order, (filed with the TTAB on December 3,
`
`2007).
`
`REQUEST FOR PRODUCTION NO. 35:
`
`Provide copies of the original contracts listed as Exhibits 103A, 103B, 103C, 104A,
`
`104B, 104C, 105A and 105B, which copies shall include all text and information, and shall not
`
`be blacked out in any manner.
`
`REQUEST FOR PRODUCTION NO. 36:
`
`Provide a copy of Exhibit 105A, Wireless Agreement No.1, Nile Cafe of approximately
`
`December 2006, which has been designated by Opposer as “misplaced.” If this document cannot
`
`be located, so state.
`
`REQUEST FOR PRODUCTION NO. 37:
`
`If you deny any of Requests for admissions Nos. 28, 29, 36, 38, 39, 40, or 41, provide
`
`copies of all documents and evidence which support the basis for such denial, if any, which have
`
`not yet been produced to Applicant.
`
`REQUEST FOR PRODUCTION NO. 38:
`
`Provide all documents and things evidencing use of your services by others: for example,
`
`copies of original billing letters from you to your customers, customer lists, user-account lists,
`
`and other documents and things.
`
`1/1647265.}
`
`-
`
`2
`
`

`
`REQUEST FOR PRODUCTION NO. 39:
`
`Provide telephone records and all other documents and things evidencing your contact, if
`
`any, with prospective or actual customers, including, without limitation, documents and things
`
`that evidence your telephone contact with customers as stated in Opposer’s Response to
`
`Interrogatory No. 5.
`
`REQUEST FOR PRODUCTION NO. 40:
`
`Provide all contracts with telecommunications service providers,
`
`including without
`
`limitation intemet service providers, telephone companies, and trunk line providers, if any.
`
`REQUEST FOR PRODUCTION NO. 41:
`
`Provide copies of all bills from, and all other communications with, telecommunication
`
`service providers, including without limitation, internet service providers, telephone companies,
`
`and trunk line providers, if any.
`
`REQUEST FOR PRODUCTION NO. 42:
`
`Provide your personal tax returns and all other documents and things showing revenue or
`
`income received or reported from 2001 to the present. Without limiting the request, Applicant
`
`notes that the opposition and the registrations cited are in the name of the Opposer individually,
`
`and therefore your response to this request should also include any documentation that relates to
`
`the determination of what portion of income derives from the lines of business associated with
`
`the marks you assert.
`
`REQUEST FOR PRODUCTION NO. 43:
`
`Provide documents and things sufficient to identify your place of employment and your
`
`employer.
`
`l/1647265.]
`
`3
`
`

`
`REQUEST FOR PRODUCTION NO. 44:
`
`Provide documents and things which evidence your allegations that you own a cargo
`
`container on rented space in Oakland, California which contains over 100 business-related file
`
`boxes.
`
`REQUEST FOR PRODUCTION NO. 45:
`
`Provide documents and things which evidence your allegations that you have a storage
`
`unit in Redwood City, California which contains 50 business-related file boxes.
`
`REQ QUEST FOR PRODUCTION NO. 46:
`
`Provide documents and things which evidence your allegations that you have an office in
`
`San Francisco, California which contains 35 business-related file boxes.
`
`REQUEST FOR PRODUCTION NO. 47:
`
`Provide all contracts between you and internet service providers that you use to provide
`
`internet access to others.
`
`REQ QUEST FOR PRODUCTION NO. 48:
`
`Provide all documents and things demonstrating or relating to the destruction or disposal
`
`of records which may render them inaccessible or unavailable. Include in your response (but do
`
`not limit your response to) specifically all such materials that relate to the file boxes (or contents
`
`thereof) addressed in request numbers 44, 45 and 46, above, and the hard disc referred to in
`
`request number 34 above.
`
`I/l647265.l
`
`

`
`OF COUNSEL:
`
`BRADLEY ARANT ROSE & WHITE LLP
`One Federal Place
`
`1819 Fifth Avenue North
`
`Birmingham, Alabama 35203-2104
`Telephone: (205) 521-8000
`Facsimile: (205) 521-8800
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I have on the date set forth below served the above and
`foregoing Applicant’s Second Set of Requests for Production of Documents and Things
`on:
`
`Mr. Daniel Mendoza
`
`P.O. Box 193156
`
`San Francisco, CA 941 19-3156
`
`by placing a copy of same in the United States Mail, certified, return-receipt requested,
`first—class, postage prepaid, and addressed to his regular mailing address, on the 22'“ day
`of December, 2007.
`
`MM Wiuammz
`
`OF COUNSEL
`
`I/1647265.]
`
`5
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91168871
`Application Serial No.
`78/479,744
`
`@
`MARK‘ Astensk
`
`) )
`
`) )
`
`)
`)
`)
`
`) )
`
`)
`)
`)
`
`DANIEL A. MENDOZA,
`
`Plaintiff-Opposer,
`
`V.
`
`DIGIUM, INC.
`_
`Defendant-Applicant.
`
`APPLICANT’S SECOND SET OF RE UESTS FOR ADMISSIONS
`
`Pursuant to Fed. R. Civ. P. 36, Defendant~App1icant, Digium, Inc. (“Applicant”), by its
`
`attorneys, requests that Plaintiff-Opposer, Daniel Mendoza (“Opposer”) admit the following
`
`under oath within thirty (30) days from the date hereof. Terms shall have the meanings set forth
`
`in the definitions of the Applicant’s First Set of Interrogatories to Opposer, served previously.
`
`To the extent that information responsive to a request for admission in this Second Set of
`
`Requests for Admissions is also, in whole or in part, responsive to a prior discovery request, this
`
`second set of Requests for Admissions shall not extend the time for answering fully the prior
`
`request, and shall not be